Re: Opposition by Gap (ITM) Inc. to registration of trade mark applications number 1946704 (class 25) – CLOTHING THE GAP (Plain Words) and number 1988866 (Class 25) – CLOTHING THE GAP (Fancy) - in the name of Spark Health Australia Pty Ltd

[2020] ATMO 173

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Gap (ITM) Inc. to registration of trade mark applications number 1946704 (class 25) – CLOTHING THE GAP (Plain Words) and number 1988866 (Class 25) – CLOTHING THE GAP (Fancy) - in the name of Spark Health Australia Pty Ltd

Delegate:	Kate Doherty
Representation:	Opponent: A J Park Applicant: S Gatford of counsel, i/b FAL Lawyers
Decision:	2020 ATMO 175 Trade Marks Act 1995 (Cth) – opposition pursuant to section 52 – Grounds of opposition pursued ss 44, 60 and 62A; s 44 established for both applications; trade marks will not proceed to registration.

Background

1. This opposition decision follows an online hearing on 21 September 2020 in relation to the following trade marks (‘Trade Marks’) pursuant to the Trade Marks Act 1995 (‘the Act’):

   Trade Mark No:               1946704

   Trade Mark:   CLOTHING THE GAP (‘Plain Word Trade Mark’)

   Priority date:                    7 August 2018

   Applicant:  Spark Health Australia Pty Ltd

   Trade Mark No:               1988866

   Trade Mark:    (‘Stylised Trade Mark’)

   Words:   CLOTHING THE GAP

   Priority date:                    7 August 2018

   Applicant:  Spark Health Australia Pty Ltd

   Specification of Goods: (Trade Mark No’s 19466704 and 1988866):  Class 25

   Apparel (clothing, footwear, headgear); Aprons (clothing); Arm warmers (clothing); Articles of clothing for theatrical use; Articles of clothing made from wool; Articles of clothing made of fur; Articles of clothing made of hides; Articles of clothing made of imitation leather; Articles of clothing made of leather; Articles of clothing made of plush; Articles of water-resistant clothing; Articles of waterproof clothing; Articles of weatherproof clothing; Articles of windproof clothing; Athletic clothing; Babies' pants (clothing); Beach clothing; Belts (clothing); Boys' clothing; Casual clothing; Children's clothing; Clothing; Clothing for babies; Clothing for gymnastics; Clothing for sports; Clothing for surfing; Clothing for swimming; Clothing incorporating digital components; Clothing of imitations of leather; Clothing of leather; Clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; Combinations (clothing); Cyclists' clothing; Dance clothing; Denims (clothing); Girl's clothing; Gloves (clothing); Headbands (clothing); Hoods (clothing); Infants' clothing; Jackets (clothing); Jerseys (clothing); Jump suits (clothing); Knitted clothing; Knitwear (clothing); Ladies clothing; Layettes (clothing); Leather belts (clothing); Linen articles of clothing; Maternity clothing; Men's clothing; Mitts (clothing); Occupational clothing (other than for protection against accident or injury); Pants (clothing); Ready-made clothing; Ready-to-wear clothing; Silk clothing; Sports clothing (other than golf gloves); Stuff jackets (clothing); Tennis clothing; Thermal clothing (not specifically adapted for protection against accident or injury); Thermally insulated clothing (not specifically adapted for protection against accident or injury); Thongs (clothing); Three piece suits (clothing); Water-resistant clothing; Waterproof clothing; Weather resistant outer clothing; Weatherproof clothing (not specifically adapted for protection against accident or injury); Women's clothing; Woollen clothing; Woven articles of clothing; Wraps (clothing); Wristbands (clothing); Wristlets (clothing) (‘Applicant’s goods’)

2. The Trade Marks were advertised accepted on 11 February 2019. A Notice of Intention to Oppose was filed on 11 April 2019 by Gap (ITM) Inc. (‘The Opponent’). The Statement of Grounds and Particulars (‘SGP’) was deemed adequate on 11 June 2019. On 4 July 2019, the Applicant filed a Notice of Intention to Defend the Oppositions. The SGP nominates the grounds of opposition ss 44, 60 and 62A.

   Evidence

3. Evidence in Support (‘EIS’), Evidence in Answer (‘EIA’) and Evidence in Reply (‘EIR’) were filed pursuant to the Trade Mark Regulations 1995 (Commonwealth) (‘The Regulations’).   A summary of evidence received from the parties is as follows:

Declarant	Party	Evidence Stage	Date	Annexures	Decision Reference
P McMahon	Opponent	EIS	October 2019	1 to 52	McMahon Declaration
L Thompson	Applicant	EIA	13 December 2019	1 to 16	Thompson Declaration
P McMahon	Opponent	EIR	13 February 2020	1 only	Second McMahon Declaration

The declarations annex evidence which includes copies of: sales invoices, operational documents, magazine and news articles, website screenshots, as well as social media pages.

1. The Opponent is the owner of the following registered trade marks (‘Opponent’s Marks’):

   Trade Mark:      GAP

   Trade Mark No: 844227

   Filing date:        27 July 2000

   Specification of Goods: (at time of filing): 

   Class 35: Advertising, dissemination of advertising material; retail services in the field of clothing, clothing accessories, clothing design, luggage, jewellery, clocks, sunglasses, toys, personal care products, household products for dining, bed and bath, housewares and glass, paper goods, leather and bags, including such services provided through stores, by means of catalogues and/or direct mail, or on-line from a computer database or the Internet

   Class 36: Credit card services; charitable fund raising services

   Trade Mark:      

   Words:                GAP Stylised

   Trade Mark No: 844225

   Filing date:        27 July 2000

   Specification of Goods: (at time of filing): 
   Class 25:  Clothing, namely jeans, shirts, t-shirts, shorts, pants, khakis, skirts, sweaters, jackets, coats, dresses, belts, hats, socks, gloves, vests, scarves, sleepwear, underwear, bathing suits, hosiery, tights, leggings, rompers, overalls, slippers and shoes

   Class 35: Advertising, dissemination of advertising material; retail services in the field of clothing, clothing accessories, clothing design, luggage, jewellery, clocks, sunglasses, toys, personal care products, household products for dining, bed and bath, housewares and glass, paper goods, leather and bags, including such services provided through stores, by means of catalogues and/or direct mail, or on-line from a computer database or the Internet

2. Written submissions were received from both parties. I decided the matter as delegate of the Registrar for Trademarks.

   Onus and Standard of Proof

3. The relevant standard of proof is the civil standard, or ‘on the balance of probabilities’.0F0F[1] 

   [1] Pfizer Products Inc v Karam (2006) FCA 1663 per Gyles J at [6] to [26].

4. The Opponent bears the onus of proof in an Opposition matter.1F1F[2] The application will succeed if one of the nominated grounds is established. In the absence of the application claiming a convention priority date, for the purposes of s 44 the rights of the parties are determined at the priority date of the application and the relevant date is 7 August 2018.

   [2] Food Channel Network Pty Ltd v Television Food Network GP (2010) FCAFC 58 [32].

   The Opponent’s Evidence

5. The McMahon Declarations provide the following information:

   ·The Opponent’s business was established in 1969, when the first store opened in the USA.

   ·They now own around 3000 trademarks in 160 jurisdictions.

   ·The Opponent characterises their business including the control exercised by the central part of the business over the subsidiaries in different countries.

   ·The first logo used in 1969 was:

   
   This mark continued to be used until 1981.

   ·The business sought to ‘go more upscale’ and in 1988 began to use:

   ·Gap has about 135,000 employees in over 3,500 stores but this includes stores which use other banners such as ‘Banana Republic’ and ‘Old Navy’ as well as diffusion stores such as ‘Gap Kids’ and ‘Baby Gap’.

   ·Australian stores first opened in 2010 with a franchise model.

   ·In 2017  the Opponent employed around 200 people in their stores in Australia.

   ·The stores dissolved in 2018.  An online partnership with online retailer, The Iconic, began at that time.

   ·GAP products can be purschased online from Australia since 2010. 

   ·Consumer awareness of the GAP brand in Australia in 2016 is provided.2F[3]

   ·Significant advertising expenditure is disclosed in Australia and overseas. 

   ·Examples of social media.

   ·Characterisation of the GAP Foundation, a charitable institute of the brand. This includes a promotion titled ‘Closing the Opportunity Gap’.3F[4] 

   [3] McMahon Declaration, Exhibit 16.

   [4] McMahon Declaration, Exhibit 35.

   The Applicant’s Evidence

6. The Thompson Declaration provides the following information:

   ·Characterises the business including status as an indigenous entity, as well as commencement in 2017.

   ·‘Closing the gap’ is a government initiative for indigenous disadvantage present in health, education and employment. 

   ·Catalogues the many accomplishments and achievements of the founder.

   ·Also uses Free the Flag, for example on Instagram.

   ·An article from 11 June 2019 in The Australian Newspaper by R Varga states ‘an international worldwide company [pursuing us] for using the word ‘Gap’.  The purpose of Spark Health is to improve Aboriginal peoples’ lives.’

   Grounds of Opposition

   Section 44 – Identical etc. trade marks

7. Section 44 of the Act provides:

   44 Identical etc. trade marks

   (1)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1:       For deceptively similar see section 10.

   Note 2:       For similar goods see subsection 14(1).

   Note 3:       For priority date see section 12.

   Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   (2) …

   (3)  If the Registrar in either case is satisfied:

   (a)  that there has been honest concurrent use of the 2 trade marks; or

   (b)  that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   Note:          For limitations see section 6.

   (4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)  beginning before the priority date for the registration of the other trade mark in respect of:

   (i)  the similar goods or closely related services; or

   (ii)  the similar services or closely related goods; and

   (b)  ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1:       An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2:       For predecessor in title see section 6.

   Note 3:       For priority date see section 12.

8. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1) which are that at least one of the trade marks upon which it relies:

   1.Has a priority date which is earlier than that of the Trade Mark (‘the first requirement’), and;

   2.Is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’), and;

   3.Is in respect of similar goods which are closely related to the Opponent’s goods (‘the third requirement’)

9. The first requirement is not in dispute, the priority dates of the Opponent’s Marks are substantiated by the Register and are approximately eighteen years earlier than the priority dates for the Trade Marks.4F[5]

   [5] See above at [1] and [4].

10. The third requirement is also easily resolved, because the goods claimed in each of the Trade Marks and the Opponent’s Marks are all in Class 25 and are clearly the same or similar goods. The Applicant’s goods are also closely related to the class 35 retail services claimed in the Opponent’s Marks.  I will now consider the second requirement:

    Substantially Identical

CLOTHING THE GAP GAP

1. The test to determine whether the marks are substantially identical is to compare the marks side by side.33F5F[6]  The marks share the word, GAP, which is an essential feature having no logical connection with the class of goods.6F[7]  Differences include the additional two words which are present in the Plain Word Trade Mark, namely ‘Clothing The’.   Minor differences which are not de minimus will reach the threshold required to overcome a finding of substantially identical.  Therefore, I find the additional words lead to the conclusion the marks are not substantially identical.

   [6] Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66, [12].

   [7]  Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 [39].

GAP

1. For the side by side comparison of the stylised marks, I do not find that the stylisation is significant enough to enliven considerations distinct from the findings I have made above in relation to the Opponent’s Marks with the Plain Word Trade Mark.  I therefore find the marks are not substantially identical.

Deceptive similarity

1. Section 10 of the Act defines deceptive similarity as follows:

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

2. A determination of ‘deceptive similarity’requires an assessment of the likelihood of deception or confusion arising from a recollection or impression of the respective marks by the potential consumers of the goods7F[8]. This is assessed by the standards of ordinary people ‘who should not be credited with high perception or habitual caution’ and in the context of the way in which the particular goods are sold.8F[9]  A possibility of confusion will not be sufficient there must be a real tangible danger of confusion.9F[10] A likelihood of confusion will exists if there ‘is a real likelihood that some people will wonder or be left in doubt about whether the two sets [of goods] come from the same source.’10F[11] The use considered is notional use for the nominated classes.11F[12]

   [8] Shell Co. of Australia v Esso Standard Oil (Aust.) Ltd. (1963) 109 CLR 407, 416.

   [9] Australian Woollen Mills v F S Walton and Co Ltd (1937) 58 CLR 641, 658.

   [10] Australian Woollen Mills v F S Walton and Co Ltd (1937) 58 CLR 641; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 529, 594-5; Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 [44].

   [11] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 [50(ii)].

   [12] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353, 362.

3. In estimating the effect or impression produced on the mind of potential customers, Clarke v Sharp directs attention to the appropriate comparison in the circumstances:

   One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing results of such matters, but by judging the effect of the respective wholes.12F[13]

   [13] Clark v Sharp (1898) 15 RPC 141 [146].

4. The marks share the word, GAP, the Opponent’s Marks are wholly comprised of that word.  The word GAP is distinguishing for the class of goods, having no logical or descriptive association.  The additional words in the Trade Marks are wholly descriptive for the class of goods, CLOTHING THE.  As a verb, which is a common and reasonable interpretation, the words are inevitably associated with retailing garments.  Because these words are descriptive, they cannot be an essential feature or dominative cognitive clue, they must therefore be discounted.13F[14] 

   [14] E and J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27 [75].

5. It would be improper for me to interpret the mark by dissecting it into the constituent elements.14F[15]  Where the plain words have meaning the whole of the mark should be read in that way.    The Opponent is the owner of a number of other marks on the register such as BABY GAP and GAP KIDS which form a series like collection, and this potentially increases the likelihood of confusion.  The Opponent’s family of marks suggests to consumers that the Trade Mark denotes the same trade origin.  I accept the Opponent’s submission that many large brands have corporate responsibility programs, and a consumer will wonder if the goods in this application are either GAP or GAP Foundation branded garments.  There would be ‘contextual confusion’.

   [15] Frootloops Trade Marks [1998] RPC 240, pp.242.

6. Although there has been no actual confusion, this is not an essential requirement and the very short time the Trade Marks have been present on the Register as well as the absence of evidence of any campaign virality or widespread distribution further mitigates this.

7. For the above reasons, due to the common suffix, GAP, I am satisfied that the Trade Marks so nearly resemble the Opponent’s Marks in a material way such that it would be likely to deceive or cause confusion among persons of ordinary intelligence and memory, allowing for imperfect recollection.  I find deceptive similarity has been established.

   Endorsement

8. The possibility of requesting an endorsement in relation to the colour scheme for the Stylised Trade Mark was canvassed at the hearing.    The minimal stylisation of the Applicant’s Stylised Trade Mark would not allow for the mark to be distinguished from the Opponent’s Plain Word Mark in the same class of goods even with an endorsement applied to the stylised mark. 

9. I have found that the Trade Marks are deceptively similar to the Opponent’s Marks on the Register.  However, evidence of use has been filed and the provisions relating to use will now be considered.

   Subsection 44(4): prior continuous use

10. Pursuant to subsection 44(4) of the Act the Applicant may overcome a finding under s 44(1) through the provision of evidence showing continuous use of the Trade Mark on, or in, relation to, the Applicant’s goods for a period beginning before the priority date of the Opponent’s Marks.

11. In the present case the priority date of the Trade Marks is 7 August 2018.

12. The EIA provides evidence to the effect that the Applicant has continuously used the Trade Marks for clothing and apparel since after 7 August 2018.  In particular the evidence in the EIA is that the Applicant’s business commenced in October 2017.15F[16]  It is less clear from what date the Trade Marks have been used as a trade mark pursuant to s 7 for the Applicant’s goods.16F[17] 

    [16] Thompson Declaration, [5].

    [17] Thompson Declaration, [8] and [10].

13. A YouTube® video shows two styles of t-shirt displaying the Trade Mark, a prominent design has the Trade Marks placed anteriorly and central on the t-shirt superiorly with the word ‘NAARM’.17F[18]  Due to the design of this garment, there is no information before me as to how the Trade Marks would be understood.  The Trade Marks appear to be a tag-line used with a brand name, I would be forced into conjecture to determine if this use is understood as s 7 use by the relevant consumers.18F[19]

    [18] Thompson Declaration, [9].

    [19] Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662; 375 ALR 251, [44].

1. There is evidence of screenshots of websites offering the Applicant’s goods for sale, these are dated after the priority date namely 31 October 2019.  A Supply Nation Christmas Gifts catalogue also features the goods but is dated 2019, after the relevant time. 

2. I find that the Applicant has not continuously used the Trade Marks (with alterations or additions that do not substantially affect the identity of the Trade Marks) from a period beginning before the priority date of the Opponent’s Marks in respect of the Applicant’s goods. I find that the provisions of subsection 44(4) of the Act cannot be applied to the Trade Marks.

3. I find the Trade Marks are deceptively similar to the Opponent’s Marks, I do not find there has been continuous use of the Trade Marks before the priority date of the Opponent’s Marks. Therefore, I find the ground of opposition pursuant to s 44 is established.

   Decision

4. The Opponent has established the s 44 ground of opposition in relation to each application. Pursuant to section 55(1), Trade Mark numbers 1946704 and 1988866 will not proceed to registration.

5. The parties may appeal this decision to the Federal Court in accordance with s 56 of the Act. If the Registrar has been served with notice of appeal, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.

   Costs

6. Costs ordinarily follow the event for an Opposition Hearing.  No reason is apparent which would alter that proposition.

7. Therefore, I direct costs against the Applicant pursuant to s 221 of the Act in the relevant amounts prescribed by Schedule 8 of the Trade Mark Regulations 1995 (Cth).  In the circumstances, the hearings for the two trade mark oppositions were heard concurrently and the evidence filed related to both marks therefore allowable costs should be apportioned in the following way:[20]

   [20] Hume Industries (Malaysia) Berhad v James Hardie & Co Pty Ltd (2001) 53 IPR 591.

   ·Full scale for costs relating to Trade Mark Number 1946704, and;

   ·20% of the scale for costs relating to Trade Mark Number 1988866.

   Kate Doherty
   Hearing Officer
   Oppositions and Hearings
   Trade Marks and Designs
   10 November 2020